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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 19
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`MICROSOFT CORPORATION,
`Petitioner
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`v.
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`WINDY CITY INNOVATIONS, LLC,
`Patent Owner
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`____________
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`Case No. IPR2016-01155
`U.S. Patent No. 8,694,657
`____________
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`PETITIONER’S UNOPPOSED MOTION FOR ADMISSION PRO HAC
`VICE OF JOHN W. McBRIDE PURSUANT TO 37 C.F.R. § 42.10(c)
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`IPR2016-01155
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`Petitioner, Microsoft Corporation (“Microsoft”) respectfully requests that
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`the Board recognize John W. McBride, Esq. as pro hac vice counsel for this
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`proceeding. Patent Owner has indicated that it does not oppose.
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`I.
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`BACKGROUND
`Microsoft’s Unopposed Motion for Pro Hac Vice Admission is being filed
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`pursuant to and in compliance with the Notice of Filing Date Accorded to Petition
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`and Time Period for Filing Patent Owner Preliminary Response, which was filed
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`June 13, 2016 (Paper 3) (the “Notice”). The Notice authorizes the parties to file
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`motions for pro hac vice admission under 37 C.F.R. § 42.10(c). Further to the
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`Notice, such “motions shall be filed in accordance with the ‘Order – Authorizing
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`Motion for Pro Hac Vice Admission’ in Case IPR2013-00639, Paper 7” (the
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`“Order”).
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`II. TIME OF FILING
`This Unopposed Motion for Pro Hac Vice admission is being filed in
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`accordance with the Notice Authorizing the Filing of a Motion for Pro Hac Vice
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`admission, and is filed greater than 21 days after that Notice.
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`III. STATEMENT OF FACTS
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`As required by the Order, the following statement of facts, supported by the
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`attached Declaration of John W. McBride in Support of Motion for Pro Hac Vice
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`Admission (Ex. 1049), shows that there is good cause for the Patent Trial and
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`IPR2016-01155
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`Appeal Board (“Board”) to recognize Mr. McBride pro hac vice in this
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`proceeding. As required by 37 C.F.R. § 42.10(c), lead counsel, Joseph Micallef, is
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`a registered practitioner experienced in proceedings before the USPTO.
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`Mr. McBride is an experienced litigation attorney. Mr. McBride has been a
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`litigating attorney for more than nine years, and has been involved in numerous
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`patent litigation cases in federal courts and matters before the Board. Mr.
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`McBride’s experience includes representing a wide range of clients in complex
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`intellectual property litigation, and he has appeared as counsel for Microsoft in
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`matters before the International Trade Commission, and various District Courts.
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`Mr. McBride is a member in good standing of the Illinois State Bar, with no
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`suspensions or disbarments from practice, nor any application for admission to
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`practice denied, nor any sanctions or contempt citations, and is admitted to
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`practice in the United States Court of Appeals for the Federal Circuit. His
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`mailing address is at Sidley Austin LLP, 1 South Dearborn Street, Chicago, IL
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`60603, his email address is jwmcbride@sidley.com, and his direct dial is (312)
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`853-7014.
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`Mr. McBride has worked with lead counsel in most aspects of this
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`proceeding. As such, Mr. McBride has reviewed and is very familiar with (i)
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`U.S. Patent No. 8,694,657, the patent at issue in this proceeding, (ii) the prior
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`art relied upon in Microsoft’s Petition, (iii) the legal and factual arguments that
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`IPR2016-01155
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`have been addressed by Microsoft, and (iv) the developments in this proceeding
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`since the filing of Microsoft’s Petition, as well as the developments in related
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`matters before the Board. Mr. McBride has also been involved in a number of
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`other proceedings before the Board and is familiar with its established
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`practices. Accordingly, he has established familiarity with the subject matter at
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`issue in these proceedings and the conduct of these proceedings to date.
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`Mr. McBride has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37
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`C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§11.01 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. §11.19(a).
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`Microsoft’s Motion for Pro Hac Vice Admission is accompanied by a
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`Declaration of John W. McBride (Ex. 1049) as required by the Order.
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`IV. ANALYSIS
`The facts described above and in the McBride Declaration (Ex. 1049),
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`establish that there is good cause to admit Mr. McBride pro hac vice in this
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`proceeding under 37 C.F.R. § 42.10(c). Lead counsel is a registered practitioner,
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`Mr. McBride is an experienced litigating attorney, and Mr. McBride has an
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`established familiarity with the subject matter at issue in these proceedings.
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`IPR2016-01155
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`V. CONCLUSION
`Therefore, Microsoft respectfully submits that there is good cause for the
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`Board to recognize Mr. McBride as Pro Hac Vice during these proceedings.
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`Dated: February 14, 2017
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`Respectfully submitted,
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`/s/Joseph A. Micallef
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`Joseph A. Micallef
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`Reg. No. 39,772
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`Sidley Austin LLP
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`1501 K Street, N.W.
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`Washington, D.C. 20005
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`(202) 736-8492
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` Attorney for Petitioner
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`4
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`IPR2016-01155
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 14th day of
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`February, 2017, I caused to be served a true and correct copy of the foregoing
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`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of John W.
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`McBride Under 37 C.F.R. § 42.10 (and accompanying Declaration of John W.
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`McBride) on the following counsel for Patent Owner:
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`Peter Lambrianakos
`Alfred R. Fabricant
`Vincent J. Rubino, III
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
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`Dated: February 14, 2017
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`/s/Joseph A. Micallef
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`Joseph A. Micallef
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`Reg. No. 39,772
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`Sidley Austin LLP
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`1501 K Street, N.W.
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`Washington, D.C. 20005
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`(202) 736-8492
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` Attorney for Petitioner
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`IPR2016-01155
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`.
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`
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`1029
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`“Galacticomm Announces Internet Connectivity Option,”
`Boardwatch Magazine (Sep. 1994)
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`IPR2016-01155
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`Pet’r’s Unopposed Mot. for Admis. PHV of Mr. McBride
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`.
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`1033
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`Donath Decl. — Second Int’l WWW Conference (stamped) [NOT
`FILED]
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`Declaration of Robert Stein (IPR2016-01141, Ex. 1011) [NOT
`FILED]
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`Stein, et a]., Major BBS System Operations Manual, Version 6.2
`(IPR2016—01 141, Ex. 1012) [NOT FILED]
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`
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`1
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`1041
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`1042
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`1043
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`1044
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`1045
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`1046
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`1047
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`1048
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`1049
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`Developer’s Guide for The Major BBS, Version 6.2 (IPR2016-01 141,
`Ex. 1013) [NOT FILED]
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`Galacticomm announces Internet Connectivity Option for the Major
`BBS, Boardwatch (September 1994)(1PR2016-01141, Ex. 1014)
`[NOT FILED]
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`Thompson, J., Galacticomm Unveils Worldgroup (Boardwatch,
`March 1995) (IPR2016—01 141, Ex. 1015) [NOT FILED]
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`Gliedman, J., A Truly Major BBS (IPR2016-01 141, Ex. 1016) [NOT
`FILED]
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`Excerpts from InfoWorld, March 14, 1994 (IPR2016-01141, Ex.
`1017) [NOT FILED]
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`Excerpts from Calacticomm Calendar (IPR2016-01141, Ex- 1018)
`[NOT FILED]
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`ID eclaration of John W. McBride in support of Motion for Admission
`'ro Hac Vice [NEW]
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